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Frequently Asked Questions about Trademarks

  1. What is a trademark?
  2. How is a trademark different from a Patent and Copyright?
  3. Why are trademarks important?
  4. How do I select a trademark for my business?
  5. What is a trademark search, and should I have one done?
  6. Can I do my own trademark search?
  7. After I select a trademark, how do I make it my own?
  8. Why should I file for federal trademark registration?
  9. Should I have an attorney?
  10. Can my federal trademark registration be refused?
  11. How long will it take for my mark to register?
  12. How long does a trademark registration last?
  13. Is a federal registration valid outside of the United States?
  14. Can I reserve a trademark in case I want to use it later?
  15. What do the designations "TM" or "SM" or the ® mean?
  16. Are there other kinds kinds of federal trademarks?
  17. May I assign or transfer the ownership of my trademark to someone else?
  18. What if someone else is using my registered mark on related goods and services?
  19. What are trademark monitoring and document filing services?
  1. What is a trademark?
    A trademark is a mark, such as a word, symbol (logo), phrase, musical tune, or almost anything that can be used to identify a particular manufacturer or seller's products and distinguish them from the products of another.  When the product is a service rather than goods, the mark is called a service mark; service marks are generally treated under the law the same as trademarks and can be just as valuable. Common examples of famous trademarks are, “Nike” and “Coca-Cola” whereas “Google” for the search engine is an example of a service mark.  These famous marks help consumers identify their goods and services from those of their competitors, such as “Adidas”, “Pepsi”, and “Bing”.

    Under some circumstances, trademark protection can extend to include other aspects of a product, such as its color or its packaging. For example, the yellow MacDonald arches serve as identifying marks.  Such marks fall generally under the term "trade dress," and may be protected if consumers associate that mark with a particular manufacturer or seller rather than the product in general.

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  2. How is a trademark different from a Patent and Copyright?
    Ideas come in many forms.  Patent Law protects ideas that become new and useful inventions.  Copyright Law protects ideas that become original human expressions.  Trademark Law protects ideas that materialize into unique marks used to distinguish one’s goods or services from competitors’ goods or services.  Trademarks do not protect human expression nor do they protect inventions.

    For example, suppose you invented a novel car that runs on water.  You then form a company and start selling the car labeling it the "Watermobile."  You also write a book about the car and how it works, thereby gaining a copyright on the book the moment you typed it into your computer.  A U.S. patent on the car will give you the right to prevent others from making, selling or using the car, but will not stop others from copying your book.  However, your copyright will protect the book, but not the car.  When you started selling the cars under the label "Watermobile" you started accruing trademark rights, the trademark being "Watermobile", but the trademark rights you acquire (over time and/or by registering the trademark) will protect neither the car nor the book.  Your trademark rights will only prevent others from selling water cars under the label "Watermobile" or any other confusingly similar label.

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  3. Why are trademarks important?
    Listed below are some, but not all, the reasons trademarks are important:

        Trademarks are repositories of goodwill.
    Over time, trademarks can become extremely important because they are vessels that hold customer goodwill.  The “goodwill” felt by a customer toward a business is the tendency to continue to use a particular product or service of the business.  Trademarks are potent tools for the creation of goodwill.  Over time, trademarks tend to establish consumer goodwill based on quality of products or services.  They do this by imprinting upon the public consciousness indelible connections between the marks and past satisfaction with products bearing the marks, thereby raising expectations of present and future satisfaction associated with the marks.  In this way trademarks actually sell goods or services by influencing purchasing patterns in consumers.  The more distinct a trademark is, the more influence it has on consumer purchases.

    Trademark Law seeks to protect consumer recognition of trademarks - preferably favorable recognition in the form of goodwill.  Trademark law is concerned not only with the source of the products but also with "the goodwill, reputation, and consumer protections associated with a particular trademark." See Intel Corp. v. Terabyte Int'l, Inc. (9th Cir. 1993) 6 F 3d. 614.

        Trademarks are valuable assets.
    Trademarks can also be valuable assets of a company, a property interest protected by law.  The value of trademarks resides in the goodwill generated as they become increasingly identified with high standards of quality, technical excellence and business credibility.  In other words, it is really the goodwill associated with a trademark that defines the value of the trademark.  In addition, the concept of trademarks being valuable assets of a company is universally recognized by the accounting profession.  There are many situations where businesses are required to have a trademark appraisal, such as for mergers, acquisitions and tax reporting.  The Financial Accounting Standards Board Statement of Business Combinations (ASC 805) requires a disclosure of trademark values because of they contribute to the overall value of a business.

    “The single largest source of intangible value in a company is its trademark,” says David Haigh, founder of Brand Finance, a brand-valuation consultancy, and according to a recent report (Global 500 2012) from Brand Finance, the five most valuable trademarks in the world are: "Apple" valued at $70.6 billion, "Google" valued at $47.4 billion, "Microsoft" valued at $45.8 billion, "IBM" valued at $39.1 billion, and "Walmart" valued at $38.3 billion.  Valuable assets indeed!

        Trademarks identify and differentiate products of one business from those of other businesses.
    Since modern product distributorship channels are varied and indirect, it is virtually impossible for the consuming public to, with any degree of certainty, link a product to an identifiable source or origin without some identifying mark on or near the product.  Without identifying marks, buyers would have problems buying products that they previously bought and liked.  With identifying marks, buyers can easily identify the products and services they previously liked.   Trademarks permit buyers to know what they are getting.  A buyer need not rely on personal knowledge about the sources of products, but can rely more on his or her familiarity with the trademarks affixed to the products; a familiarity ingrained in the buyer’s sub-conscious mind from previous satisfaction or dissatisfaction.  Trademark law attempts to protect the public’s reliance upon a mark so that "it will get the product which it asks for and wants to get." Two Pesos, Inc. v. Taco Cabana, Inc. (1992) 112 S. Ct. 2753.

        Trademarks create a perception of product consistency.
    Trademarks can be used to inform the public that all products or services bearing a common mark are consistent and of equal quality.  This gives consumers the confidence to know that if they purchase something, for example a can of soda labeled “Pepsi” at one location, they can expect the same soda from a “Pepsi” can at other locations regardless of geography.

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  4. How do I select a trademark for my business?
    Creating or selecting a trademark is no easy task, but the importance of selecting a worthwhile trademark cannot be emphasized enough.  Often times the trademark you choose will play a role in shaping the consumer's first impression of the product or service offered by your company.  While there are no hard-and-fast rules of what may be a successful trademark, we present below some useful guidelines.

    First of all, you should not pick just one possible trademark; you should pick several candidates, six or seven at least, because some of them might not survive the recommended trademark search addressed in Answer #5

    If any of your trademark candidates include text (one or more words) you should consider the following:
    • The words should be easy to read, spell, pronounce and remember in all relevant languages;
    • The words should have no undesirable meanings or connotations in slang;
    • The words should have no adverse meaning in any of the languages of foreign countries in which you intend to sell; (For example, the NOVA car was not well received in many Spanish speaking countries because in Spanish “nova” means “no go.”)
    • The words should not create confusion as to the nature of the product; (For example, words that bring to mind sugary foods should not be part of a mark used for diet products.)
    • It should be adaptable to all advertising media. (No words that might be banned by censors.)

    You should then assess each candidate as to its strength and distinctiveness.  In general, the stronger or more distinctive the mark, the easier it is to register and protect from use by another.  Trademarks can be categorized as having the following levels of strength or distinctiveness, from strongest to weakest:

        Fanciful (Coined) Words:
    These are invented words without any real meaning in any language.  For example, “Kodak” and “Exxon” are fanciful marks because neither has any dictionary meaning at all.  Fanciful marks are generally afforded the broadest scope of protection since they are more likely to be considered distinct.  On the negative side, however, they may be more difficult to remember for consumers requiring greater efforts in advertising the products.  Another example is the mark “Google” because it had no dictionary meaning at all until it was adopted by the web search company so named.

        Arbitrary Marks:
    Marks that are made up of words that have a dictionary definition but the definition has no relation to the product itself or to any of its qualities (e.g. “Apple” for a computer company).  As is the case with fanciful marks, the level and ease of protection is generally high, but since there is no direct association between the mark and the product, greater marketing efforts are needed to create such an association in the mind of the consumer.  Furthermore, an owner of an arbitrary mark typically cannot stop others from using the mark for goods that fall within the dictionary definition of the mark.

    As an interesting side note concerning fanciful vs. arbitrary marks: The word “googol” has had a dictionary meaning since it was coined by 9-year-old Milton Sirotta, nephew of American mathematician Edward Kasner in 1938; it is defined as a very large number, the digit 1 followed by 100 zeros.  In 1997 one of the founders of Google.com (Larry Page) was interested in using “googol” in the company’s domain name, but when his friend (Sean Anderson) searched for availability, he entered “google.com” due to a spelling error.  Larry liked the name so they ended up registering google.com instead of googol.com, and eventually selected “Google” as the company’s trademark.  Absent the spelling error, the selected trademark might have been “Googol” in which case the company would be using an arbitrary mark (“Googol”) rather than the fanciful mark (“Google”) they now use.

        Suggestive Marks:
    Marks that suggest some attribute or quality of the goods or services, but require some thought or imagination on the part of a customer to be aware of the suggestion.  Examples of suggestive marks are AIRBUS for airplanes and VOLKSWAGEN for automobiles.  The appeal of suggestive marks is that they are a form of advertising and tend to create in the minds of customers an association between the mark and the suggested attribute or quality.  There is a risk, however, that some jurisdictions may consider a suggestive mark too descriptive or not sufficiently distinctive to meet the criteria for trademark protection, or will not give the mark as much protection as a fanciful or arbitrary mark.

        Descriptive Marks:
    These are marks that directly tell the consumer what the product is or describe an attribute, feature, end result, use of the product, or are merely laudatory (“best”, etc.); no amount of imagination or thought is required of the consumer to understand the message that the mark is conveying.  For example, the mark “TENDER AND TASTY” for a butcher shop directly conveys the message that the meat sold there is tender and tasty.  A consumer need not exercise any degree of imagination or thought to understand the message.  Marks that fall within this category are generally not granted any trademark protection unless and until they acquire a “secondary meaning,” which usually takes several years.

    A descriptive mark acquires a “secondary meaning” when it can be shown that consumers in the relevant market have learned to associate the mark with a single source.  In other words, when first used on a product, a descriptive mark has only its usual meaning to a consumer, but after years of use, the mark may also mean the source of the product.  For example, suppose Jones’ butcher shop started marking its prime beef “TENDER AND TASTY.”  Originally the mark had only one meaning, it meant that the meat was tender and tasty, but after years of use by Jones, meat buyers began to see “TENDER AND TASTY” as also meaning that the meat came from Jones’ butcher shop.  So “TENDER AND TASTY” then had a secondary meaning - that the meat came from Jones’ butcher shop.  At that point “TENDER AND TASTY” became a property right of Jones protectable by Trademark Law.

    Examples of descriptive marks found to have acquired secondary meanings are "HONEYBAKED" for hams and "ICE" for beer.

    Needless to say, it takes years and extensive marketing for descriptive marks to acquire secondary meanings without which they are generally not protectable, and there is no guarantee of success.  So it is best to avoid descriptive marks unless you have a large marketing budget.

        Generic Terms:
    A generic term is a word or phrase that is or has become the common name associated with a type of product and can therefore never receive trademark protection.  For example, “auto” is a generic term for automobiles.  Generic terms are not registrable or protectable.  Furthermore generic terms by law cannot acquire secondary meanings, so they will never be registrable or protectable no matter how much marketing is done.  This is because trademarks do not provide a monopoly on language, and you cannot exclude others from appropriately and fairly describing what it is that they are selling.

    As an example, “ROOIBUS” was a trademark used on tea products and was registered with the U.S. Patent and Trademark Office for many years.  Later “ROOIBUS” became the subject of numerous costly court battles in an attempt to protect and enforce the trademark.  Ultimately the registration was cancelled because “Rooibos” is the generic name for the plant used to make the tea products.  Another example of a term found to be generic is “SUPER GLUE” for strong and fast-setting glue.

    From all the above, it is best to pick marks that are fanciful or arbitrary.  Do not pick a descriptive mark unless you are willing to risk heavily in time and money trying to create a secondary meaning.  Under no circumstances should you waste your trademark money on generic terms.  We will be happy to help you in your selection.

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  5. What is a trademark search, and should I have one done?
    Once you have made a list of trademark candidates, you should most definitely have a search conducted on each and evaluated by a qualified attorney.  The search should be conducted in the countries of interest to determine if the mark is available.   It is better to learn of potentially conflicting marks before investing time and money on marketing products under your new mark.  Lack of knowledge is normally not a defense to trademark infringement.

    The search should focus on several areas of concern:  (1) marks that could be used by the USPTO as a basis for refusing registration of your mark,  (2) marks that are confusingly similar to your mark and which could be the basis for an infringement lawsuit against you on the grounds of “likelihood of confusion,”  (3) famous marks similar to your mark that could be the basis of a “dilution” action against you, and  (4) marks similar to your mark that are owned by litigious companies with large trademark litigation budgets.  There is some overlap of issues (1) and (2) in that “likelihood of confusion” is a common basis for refusing registration.

    As to likelihood of confusion, it is the basic test that is used to determine trademark infringement.  Under this test, the question is whether the average purchaser of a product would be confused or deceived as to the source of the product.  This means that a pre-existing trademark need not be identical to your proposed trademark to prevent your use.  Remember that valid trademarks are supposed to indicate the source of corresponding products, but if two or more marks are so similar that an average buyer is likely to be confused as to source, then we have a “likelihood of confusion.”  For example, Blue Shield and Red Shield have been held to be confusingly similar and the courts ordered that Red Shield not be used for insurance services.

    As to dilution, the Trademark Dilution Act of 1995 is a federal law which protects famous trademarks from uses that dilute their distinctiveness, even in the absence of any likelihood of confusion or competition.  For example, GOOGLE is without question a famous trademark associated with a software company.  If company X began selling a product not related in any way with software but marked the product “Google”,  the GOOGLE software company would probably have cause to sue company X on the grounds of “dilution.”  Many states also have anti-dilution statutes.

    As to litigious companies, in the world of trademarks there are many wealthy companies that have a reputation, justly earned, for opposing registration and use of any mark that comes even remotely close to any of their marks.  They file oppositions, petitions to cancel and lawsuits even if they have little or no legal justification for doing so,  because they hope to win by having a much bigger litigation budget.

    We would be happy to provide you with practical guidance, both in conducting the search, and in assessing the results.  Our searches focus on all the issues addressed above.  Our basic searches include all the searchable trademark databases (registered and pending) of the U.S. Patent and Trademark Office; and a search on the Internet for “common law” unregistered trademarks.  Common law searches are important because other trademark owners may have protected legal rights in trademarks similar to yours that are not federally registered.  Therefore, those trademarks will not appear in the USPTO's database but could still ultimately prevent your use of your mark.  More extensive searches can include state databases and all searchable trademark databases pertaining to foreign countries in which you want protection.

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  6. Can I do my own trademark search?
    Yes,  we encourage our clients to do their own searches.  Additional information never hurts when you are making important decisions.  You can search registered trademarks, pending trademarks, and dead trademarks at the U.S. Patent and Trademark Office's TESS (Trademark Electronic Search System) website here.  We find that client searches are very helpful and can be a very positive learning experience for the client, but you should not rely solely on your search results because trademark law is very complex, and misinterpreting the results of your own search can lead to disasterous results.

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  7. After I select a trademark, how do I make it my own?
    In the U.S. there are basically three ways to establish rights in a trademark:  (1) actual use of the mark in commerce in connection with the offer and sale of products,  (2) registering the mark, or  (3) filing an “intent-to-use” application.

    In some countries, particularly those with legal systems based on English common law (Australia, Canada, the United Kingdom and the United States), first use of a mark can establish common law rights in the mark, but the common law rights are limited to the geographic area in which the mark is actually used.  In other words, the first person to use a mark has a common law right to prevent others from using the mark, or confusingly similar marks, but the common law protection is confined to the established market - places where the common law owner can prove his or her products were actually offered or sold.  Common law provides no protection outside the established market.  Also, be aware that there are countries that do not recognize common law trademarks, in which case the first registrant of a mark acquires exclusive rights.

    Registration usually provides protection much more extensive than common law.  Registering a mark at the state level establishes rights statewide, and registering the mark at the federal level (with the USPTO) establishes rights nationwide.  In most foreign countries, registration at the national level establishes rights nationwide.

    Depending on the state, registration at the state level may provide additional benefits such as the right to attorneys' fees and costs, and state anti-dilution protection in the event another attempts to use the trademark, or a confusingly similar mark.  One benefit to registration at the state level, is that it can often be done within 2 to 6 weeks, whereas federal registration often takes 18 months or more.  Also, registration at the state level is significantly less expensive than registration at the federal level, so some trademark owners register their trademark at both the state and federal level.

    A prerequisite to registration of a mark at the federal level is actual use of the mark either in interstate commerce (in more than one state) or in a foreign county.  If your market area does not yet meet the prerequisite, you may file an “intent-to-use” application with the USPTO to reserve a trademark for future use, but the reservation is only for a limited time and expires if there is no actual use within the time limit.  Although the majority of states require actual use to file a state trademark application, some states now permit registration based on intent to use the trademark.  See Answer #14 for more on “intent-to-use” applications.

    As part of our core business we prepare and file registration applications at both the federal and state levels, and in foreign countries.  We will be happy to quote you a fixed fee for doing so.

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  8. Why should I file for federal trademark registration?
    To begin with, a pre-requisite to filing for federal registration is that you must be engaged in interstate or foreign commerce.  For goods, "interstate commerce" generally involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods.  With services, "interstate commerce" generally involves offering a service to customers in another state or rendering a service that affects interstate commerce (e.g., restaurants, gas stations, hotels).

    Once you achieve a federal trademark registration on the Principal Register you will enjoy several advantages, including:
    • Public notice of your claim of ownership of the mark;
    • A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
    • The ability to bring an action concerning the mark in federal court;
    • The use of the U.S. registration as a basis to obtain registration in foreign countries;
    • The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
    • The right to use the federal registration symbol ® and
    • Listing in the United States Patent and Trademark Office’s online databases.

    As a part of our core business we will be happy to prepare and file federal and state trademark applications for you. Our rates for doing so are very competitive.

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  9. Should I have an attorney?
    As for picking a mark that makes the most sense for your product, your marketing team, your advertising agency, and your own experience are the resources you can use to help you find a unique, credible mark that will stand the test of time.  Trademark attorneys are the experts that can help you narrow your choices to those that are the strongest protection-wise and most likely to successfully survive the registration process.  They are also good at helping you avoid marks that are too similar to those that others are already using by doing a trademark search.  See Answer #5 for more on searches.  It is best to consult with a trademark attorney that has extensive trademark experience in the early stages of the process;  you should not assume that every attorney is experienced in trademark law.  Check the attorney's credentials.

    Although not required, most applicants for federal and state registration use trademark attorneys to prepare and file their applications, and for help during the application process with several things that could seriously impact their trademark rights, such as determining the best way to describe the goods and services and preparing responses to refusals that an examining attorney may issue. Any mistakes in the application process can come back and bite the applicant later.  All too often mistakes do not come to light until there is a court battle over a mark, usually after the owner of the mark has invested heavily in marketing and selling products under the mark.  A trademark attorney can help you before, during, and after the trademark application process, including policing and enforcing any trademark registration that may issue.  The USPTO only registers trademarks.  The trademark owner is responsible for any enforcement.

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  10. Can my federal trademark registration be refused?
    An examining attorney with the USPTO will review the application and may issue refusals based on the U.S. Trademark Act of 1946 or the USPTO's Trademark Rules of Practice.  The USPTO may refuse to register a mark on numerous grounds.  The most common are:

        Likelihood of confusion with a mark in a registration or prior application:
    This refusal is based on the degree of similarity of the marks and the commercial relationship between the goods and services identified by the marks.  The marks do not have to be identical nor the goods and services exactly the same to find a conflict.  This is a subjective refusal; one examiner may find a conflict while another one may not.  Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion.

        Deceptively Misdescriptive or Descriptive for the goods/services:
    A mark will be refused as deceptively misdescriptive if  (1) the mark misdescribes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services; and  (2) the misrepresentation conveyed by the mark is plausible.  The USPTO is not fond of marks that deceive the public.  Answer #4 addresses descriptive marks in detail.

        A geographic term;
    A mark will be refused as primarily geographically descriptive if:  (1) the primary significance of the mark is geographic (e.g. name of a city, country, region);  (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark; and  (3) the mark identifies the geographic origin of the goods or services.

    A mark will be refused as primarily geographically deceptively misdescriptive if:  (1) the primary significance of the mark is geographic;  (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark; and  (3) the goods or services do not originate in the place identified in the mark.  The USPTO is not fond of marks that deceive the public.

        A surname;
    A mark will be refused registration if its primary significance to the purchasing public is as a surname.

        Ornamental as applied to the goods.
    In general, a mark wiil be refused registration if it is merely a decorative feature or part of the "dress" of the goods.  The USPTO considers such matter as merely ornamentation and not serving the trademark function of identifying and distinguishing the applicant's goods from those of others.

    If you have received a refusal from the USPTO, we will be happy to review it and advise you as to when and how you should respond, and quote you our fee for doing so.

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  11. How long will it take for my mark to register?
    The total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application.

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  12. How long does a trademark registration last?
    The registration is valid as long as you timely file all post registration maintenance documents.  You must file a “Declaration of Use under Section 8” between the fifth and sixth year following registration.  In addition, you must file a combined “Declaration of Use and Application for Renewal under Sections 8 and 9” between the ninth and tenth year after registration, and every 10 years thereafter.  If these documents are not timely filed, your registration will be cancelled and cannot be revived or reinstated.  We typically prepare and file declarations of use and renewals for our clients at nominal fees.

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  13. Is a federal registration valid outside of the United States?
    No.  However, certain countries recognize a U.S. application and registration as a basis for filing an application to register a mark in those countries under international treaties.  One such treaty is known as the Paris Convention for the Protection of Industrial Property which basically says that each country guarantees to the citizens of the other countries the same rights in patent and trademark matters that it gives to its own citizens.  The treaty also establishes a grace period of six months for trademark applications.  The Paris Convention treaty is followed by about 170 countries, including the United States.  Under the treaty, if a person files a trademark application in the U.S. (or any other treaty country) then files a trademark application in any other member country within the six month grace period,  the second application inherits the priority date of the first application.  Inheriting the earlier priority date can be very important in a priority contest.

    For example, suppose business X filed for trademark registration of a mark in the U.S. on March 1, 2013, and almost six months later business Y files for trademark registration of the same mark in England on August 31, 2013.  Business X later files for trademark registration of the same mark in England on September 1, 2013.  Who gets the registration in England, if one is granted?  Under the rules of the Paris Convention, business X should get the registration over business Y because:  (1) both the U.S. and England are Paris Convention members, and  (2) business X filed in England within the Paris Convention's six month grace period.

    Another international treaty called the Madrid Protocol allows a trademark owner to seek registration in any of the member countries by filing a single application, called an “international application” and designating the countries in which the owner wants trademark protection.  As of January 13, 2012 the treaty has 85 member countries, including the U.S. as of 2003.  The World Intellectual Property Organization (WIPO) administers the international registration system.

    For U.S. citizens the international application must be filed through the USPTO, but only if the applicant has a U.S. application or a U.S. registration.  The USPTO reviews the international application and if it is acceptable from a U.S. standpoint, it forwards the application to WIPO.  WIPO then reviews the application to see if it meets Madrid Protocol filing requirements.  If so and the fees are paid, WIPO then registers the mark, and notifies each designated country of the regisration.  Each designated country will then examine the regisration the same as it would a national application under its laws.  If the requirements for registration are met in any of the designated countries,  trademark protection will be grant to the mark in those countries.

    An international registration lasts for ten years from the date of registration and may be renewed for additional 10-year periods by paying a renewal fee to the WIPO.

    The two treaties can be worked to advantage.  A person can file for trademark registration in the U.S. and thereafter wait almost six months before doing any foreign filing.  Then, just before the six months expire the person can file one international application and thereby gain up to 85 foreign applications all bearing the earlier priority date of the U.S. filing.

    Please be aware that we can prepare and file foreign regstration applications in individual countries or through the two treaties discussed above at very competitive rates.  We are happy to provide fixed quotes if possible.

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  14. Can I reserve a trademark in case I want to use it later?
    Yes.  In the U.S. and elsewhere there is an option to file an intent to use (ITU) trademark application as opposed to an "actual use" application.  The basic difference between the two is whether you have used the mark or simply intend to use it.  If you have already used your mark in commerce, you may file under the “use in commerce” basis.  If you have not yet used your mark in commerce, but intend to use it in the future, you may file under the “intent to use” basis.

    The requirements for filing an ITU application are only that you have a bona fide intention to use the mark in interstate or international trade, and that your mark meets all the other requirements for registration.  An ITU application is processed by the USPTO in exactly the same way as an actual use application is processed.  It is fully examined.  When the examining attorney is satisfied that your mark is entitled to registration, it is published for opposition.  If no opposition is filed, a Notice of Allowance is issued.  You can then get up to 36 months of extensions, in six month increments, before you must begin using the mark in commerce and file a Statement of Use attesting to the use, otherwise the application will go abandoned.  Registration of the mark does not happen until you file a Statement of Use and submit evidence of the manner of its use.

    You might file an ITU application, for instance, if you have a product under development that you intend to sell in interstate trade, or you are selling a product locally (within one state) but expect to sell interstate or in foreign markets as well as in the U.S.

    As a word of caution, an applicant filing an ITU must possess a bona fide intent to use the mark.  This means more than a good faith intention to eventually use the mark in commerce.  More is required; namely evidence documenting your intent to use the trademark.  This could be samples of brochures, fliers, signs, or other materials evidencing how the mark is going to be used; website schematics or work-ups; business plans detailing the intended audience for the mark; or other objective evidence showing how the mark will be used to identify the source or origin for the goods or services it will represent.  Supporting information and documentation evidencing the applicant’s bona fide intent to use the trademark is an absolute must.

    There are many advantages to filing an ITU application, which we will be happy to explain.

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  15. What do the designations "TM" or "SM" or the ® mean
    If you claim rights to use a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim of ownership of the mark, regardless of whether you have filed an application with the United States Patent and Trademark Office (USPTO).  However, you may only use the federal registration symbol "®" after the USPTO actually registers a mark, and not while an application is pending.

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  16. Are there different kinds of trademarks?
    Yes.  A certification mark is owned by one who certifies the goods and services of others when they meet certain standards.  For example, "CE" (European conformity) and "THE GOODHOUSEKEEPING SEAL OF APPROVAL" both “certify” that products or services meet a particular standard of quality, regional origin or the like, even though the products may come from unrelated companies.  Many countries also recognize “collective marks” and “certification marks.”  A Collective mark indicates membership in a group (such as AAA [the American Automobile Association] in the United States).  A collective membership mark indicates that the user of the mark is a member of a particular organization.

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  17. May I assign or transfer the ownership of my trademark to someone else?
    Yes.  A registered mark may be assigned and a mark for which an application to register has been filed may be assignable.  Certain exceptions exist concerning the assignment of Intent-to-Use applications.  Assignments may be recorded in the USPTO for a fee.

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  18. What if someone else is using my registered mark on related goods and services?
    There are no trademark enforcement police (although maybe there should be) so the burden falls solely on the owner of a trademark to enforce it against infringers.  If you find or suspect infringement of your trademark, a typical first step is to send the infringer a cease and desist letter, although at times it is best to go ahead and to file a lawsuit as a first step.  If you are not satisfied by the response to your letter, the typical next step is to file a formal complaint against the infringer.  If the culprit is infringing your federally registered mark then the lawsuit must be filed in federal court.  If the infringement only concerns a state registered mark then the lawsuit should be filed in a court of the state of registration.  If the infringement is of common law trademark rights, the lawsuit may be filed in federal or a state court depending on the circumstances.

    Filing the complaint and serving (e.g., delivering) a copy on the infringer usually starts a lengthy lawsuit that could span several years.  You should be aware that trademark infringement lawsuits can be very expensive for all parties involved, especially since the most common issue is "likelihood of confusion" in the relevant market, which invariably requires costly survey evidence and expert testimony.  Most often the purpose of such a lawsuit is to recover money from the infringer and get an injunction.  An injunction is usually desirable because then the infringer will be in contempt of court for infringements that occur after the injunction is issued - both federal and state judges can wield a wide range of hurt, so it is not wise to be in contempt of court

    We have extensive experience litigating at both the federal and state levels, and will be happy to represent you in case you become involved in trademark litigation.  Our rates for doing so are very competitive.

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  19. What are trademark monitoring and document filing services?
    You may receive unsolicited communications from companies requesting fees for trademark-related services, such as monitoring and document filing.  They always look very official as if they were sent by the USPTO. They always display customer-specific information, including USPTO serial number or registration number and owner name, but these companies are not affiliated or associated with the USPTO or any other federal agency.  Do not send them any money without first speaking with a trademark attorney.

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